KENYA: UPDATE FROM ARIPO: OVERVIEW OF CHANGES TO THE HARARE AND BANJUL PROTOCOLS

By David Opijah,John Syekei Monday, January 17, 2022
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Introduction

The African Regional Intellectual Property Organization (ARIPO) provides an avenue among member states for cooperation in intellectual property matters. ARIPO currently has 20 member states (mostly English-speaking countries), with Seychelles being the newest member effective 1 January 2022. Individuals or legal entities from any of ARIPO’s member states can make an application with regards to their various Intellectual Property Rights (IPRs) in line with the different ARIPO protocols in force in their countries.

Significance

As an individual investor or a business, ARIPO’s intellectual property regime represent several advantages. One, it is a very convenient system that can be used to protect IPRs within the member countries through a single application that designates the specific member countries of interest. Two, the ARIPO system also provides a good planning avenue for business interests that may be looking to expand into some of the member countries in the future. Three, for goods or services that are already being promoted within some of the member countries of ARIPO, the ARIPO regime provides a good opportunity to move ahead and protect the relevant IPRs.

The Protocols

ARIPO achieves its mandate through several protocols that are available to its member states for adoption. These include; the Harare Protocol on Patents and Industrial Designs (the “Harare Protocol”), the Banjul Protocol on Marks (the “Banjul Protocol”), the Arusha Protocol for the Protection of New Varieties of Plants (the “Arusha Protocol”), and the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore (the “Swakopmund Protocol”). With effect from 1 January 2022, two of these protocols, i.e., the Harare Protocol and the Banjul Protocol, have undergone various amendments.

Amendments to the Harare Protocol

The key amendments to the Harare Protocol can be highlighted under four broad categories. First, an extension has been introduced to the length of the term of protection for Industrial Designs. Industrial Designs can now be protected for a term of 15 years, as opposed to the 10 years provided for before the amendments. Separately, exceptional occurrences such as pandemics, natural disasters, wars, civil disorder etc., have been added as grounds under which the Director General may extend a time limit where applicable.

Secondly, the disclosure standards for an invention have also been amended. Prior to the amendment, all patent applications were required to disclose the invention in a clear and concise manner. Under the new amendments, disclosure can now be assessed in the context of the enabling description with accompanying illustrations for the invention, if any.

Thirdly, under the new amendments, third parties can now appear in an ARIPO patent or utility model proceedings to provide an observation as to the patentability of an invention to which the proceedings relate. Before these amendments, no interested third parties could make submissions against the registration of an invention at ARIPO. However, it is important to note that the third party making the observations during the proceedings will still not be considered a party to the proceedings.

Fourthly, a clarification has been made as to what is meant by “new” when referring to utility models. Under the new amendments, for a utility model to be considered new, it must not have been anticipated by prior art within the jurisdictions of the ARIPO member states. With respect to industrial applicability, a utility model will be considered to be industrially applicable if it can be utilized in any kind of industry, including agriculture.

In addition to the key amendments above, some changes have also been made with respect to the examination of inventions, including new guidelines on voluntary amendments.    

Amendments to the Banjul Protocol

The key amendments to the Banjul Protocol are threefold. One, the amendments introduce a welcome flexibility to the publication of marks. Under these new amendments, it is now possible to request for the early publication of a mark where all the designated member states have issued their acceptance notices before the expiry of the 9 months period. Additionally, refused and conditionally refused marks can also be separately published under these new amendments.

Two, the new amendments introduce specific consequences for failure to adhere to the stipulated time limits under the protocol. Whenever an applicant fails to adhere to a time limit under the protocol and subsequently fails to remedy this by applying for an extension of time, the applicant’s interests are deemed to have lapsed exactly one (1) month after the lapse of the time limit.

Finally, the new amendments to the Banjul Protocol have also introduced consequences for failing to remit registration fees by an applicant. Under the new amendments, where an applicant fails to remit the fees within 12 months after the mark has been published, the application will be deemed abandoned and will not remain on the register, as was the case prior to these amendments.

Other notable amendments to the Banjul Protocol include; new rules allowing withdrawal of applications, reduction of classes or cancellation of designated states subject to payment of prescribed fees and submission of a written declaration to that effect, requirement to indicate the declaration of intention to use or actual use on the application form, and an amendment to ARIPO Forms M4, M4A, and M4B to include requirements on time limits.

Domestication and Enforceability of the Protocols

Most of the member countries have ratified one or more of the protocols. Notably, while Kenya has ratified the Harare Protocol, it has not ratified the Banjul Protocol. The effect of this, for example, is that clients can be assisted with their applications under the Banjul Protocol by member countries, such as the neighbouring Tanzania. As a Pan-African firm with offices in multiple African countries, including Tanzania, this is a service that we have a specialty in assisting the client with.

Conclusion

ARIPO provides a very important platform for the protection of IPRs for businesses that have an interest within Anglophone Africa (similar to the role that Organisation Africaine de la Propriété Intellectuelle i.e., OAPI plays for francophone Africa). We have significant experience with ARIPO matters here at Bowmans and we continue to assist our clients with a substantial volume of work within ARIPO. We regularly monitor all the relevant developments in this space with the view to always keeping our clients updated and their interests duly taken care of.